Position Summary

The Senior Innovation and Licensing Manager will evaluate, manage the protection of and help to advance to commercialization innovations that result from SDSU’s research endeavor. This position will serve as one of the primary intellectual property experts for the campus, often leading efforts to advance intellectual property transactions in furtherance of SDSU’s research, innovation, and commercialization efforts. This position will also be relied upon to provide evidence and data-driven recommendations on whether and how to protect SDSU-owned intellectual property.

The Senior Innovation and Licensing Manager is responsible for but not limited to:

Intellectual Property Evaluation and Management

• Assist faculty and researchers with the submission of intellectual property disclosures. You will interact with researchers to learn about cutting-edge technologies spanning many technical disciplines and work with researchers to develop detailed disclosures of them
• Manage follow-up with disclosing faculty and researchers to ensure sufficient intellectual property protection will be obtained prior to public disclosure and other patent-barring events
• Conduct technical, commercial and intellectual property due diligence including prior art searches, preliminary market research, and regulatory analysis for new intellectual property disclosures
• Evaluate intellectual property disclosures based on evidence obtained through due diligence to analyze barriers to commercialization and make well-articulated recommendations regarding whether to pursue patent protection at University Copyrights and Patents Committee meetings as well as advise Director throughout the patent prosecution process thereafter
• Serve as lead intellectual property and technology transfer expert when the Director is absent/unavailable
• Manage filing and prosecution of patent applications with outside counsel to obtain quality and cost-effective patent protection for SDSURF inventions. 
• Prepare patent formalities and obtain signed copes for outside counsel
• Make recommendations to Director regarding intellectual property protection strategies
• Work collaboratively with researchers and technical staff to secure intellectual property rights and work as part of a team to facilitate commercial advancement

Licensing, Faculty Engagement and Commercialization Support

• Train faculty and researchers to present their innovations without compromising SDSURF’s intellectual property position
• Work with regional partner organizations to advance SDSU technologies
• Value potential licenses and develop term sheets which take into consideration SDSURF’s interests and position licensees for success. 
• Support and/or lead full-cycle licensing negotiations from term sheet to definitive agreement in partnership with Director; efficiently usher such negotiations to execution
• Support and/or lead drafting, review, and negotiation of intellectual property-focused agreements such as material transfer, collaboration, sponsored research, inter-institutional, nondisclosure, royalty sharing, data use, and license agreements
• Seek contacts and set up meetings to license IP including working with faculty inventors and TTO colleagues to identify potential licensees
• Assist Director with operating and scoring of applications for SDSU’s new Pilot Innovation Fund, which invests in advancing faculty innovations to advance them toward commercial readiness
• Contribute to teaching teams for faculty and researcher education programs regarding intellectual property and lab-to-market commercialization
• Draft signature quality work product such as intellectual property agreements

Other duties

• Collaborate with departments and centers throughout SDSU to improve the quality and visibility of SDSU’s faculty-centered innovation and entrepreneurship programs
• Input and manage intellectual property disclosures, intellectual property filings, and related information through an online database system (Inteum)
• Assist in the management of the Technology Transfer Office website and social media presence
• Work with faculty and others on campus to advance sponsored research grant opportunities that leverage intellectual property
• Engage enthusiastically with industry, investors, and other collaborators. Represent SDSU and SDSURF with a high degree of professionalism in front of such audiences at industry and community events.
• May support drafting of marketing materials summarizing SDSURF’s technologies available for licensing and disseminate materials to potential licensees
• In partnership with Director, proposes and leads implementation of process improvements
• Present complex scientific information or legal concepts in a concise and professional manner to internal and external audiences
• Work as a team player who seeks, and effectively uses instruction and advice from professional colleagues
• Work independently, follow through on assignments and complete tasks thoroughly and accurately with deadlines and frequent interruptions and to adapt to and prioritize due to sudden shifts in work assignments.
• Build positive relationships with a variety of sophisticated stakeholders, including senior faculty, university executives and administrators, investors, entrepreneurs, technology executives, and community leaders

Department Summary

SDSU generates more than $100 million per year in research grants over all disciplines. The Technology Transfer Office (TTO) has been operating for 22 years for the purpose of protecting and commercializing intellectual property developed by SDSU faculty and staff. The TTO provides expertise to all of campus for intellectual property issues while remaining focused on its goal of commercializing research-based intellectual property for public benefit. 

Education and Experience

• Bachelor's degree, preferably in a science, engineering, or business discipline AND a Juris Doctor Degree or PhD
• A minimum of five years of professional experience relevant to innovation management and licensing
• Deep knowledge of principles intellectual property law, including an in-depth understanding of patent prosecution
• Experience drafting intellectual property agreements in a law firm, corporate legal department, or research institution setting
• Registration with the United States Patent and Trademark Office is preferred
• U.S. person status is required for this position in order to comply with the Arms Export Control and Export Administration Act. U.S. persons are U.S. citizens, legal permanent residents as defined by 8 U.S.C. 1101(a)(20) or protected individuals as defined by 8 U.S.C. 1324b(a)(3).

Compensation and Benefits

San Diego State University will offer a competitive salary based on the qualifications and experience of the selected candidate. San Diego State University also offers a rich benefits package that includes:

• Extensive Leave benefits: 14 paid holidays, 24 vacation days, and 12 sick days per year;
• Retirement security through a CalPERS defined benefit pension (with CalPERS and UC Retirement Plan reciprocity) and retiree healthcare benefits;
• An array of health, dental, and vision coverage at no-cost or low-cost to the employee; and
• California State University system fee reduction program (fee waiver) for the employee or their qualified dependent

Anticipated hiring range:  $100,000 -$125,000 annually

Diversity and Community at SDSU

At SDSU, our diversity gives us power and benefits every single member of our community. 

Through our commitment to equity and inclusion, we encourage all members of our community to purposefully learn from one another through open and respectful dialogue and responsible engagement.

Principles of Community

For more information, click here.

Supplemental Information

Initial review of the required application materials, including cover letters and resumes, will begin on February 1, 2023. To receive full consideration, apply by January 31, 2023. The position will remain open until filled.

CSU Vaccine Policy: The California State University has established a policy requiring faculty, staff, and students accessing campus facilities to be immunized against SARS-CoV-2, the virus that causes COVID-19. To access the SDSU campus, you must be fully up to date with your COVID-19 vaccinations, including a booster if you are eligible for one, or request a medical, religious, or off campus exemption, as applicable. 

The person holding this position is considered a ‘mandated reporter’ under the California Child Abuse and Neglect Reporting Act and is required to comply with the requirements set forth in CSU Executive Order 1083 as a condition of employment. 

San Diego State University is not a sponsoring agency for staff or management positions (e.g., H-1B visa). Applicants must currently be authorized to work in the United States on a full-time basis. Offers of employment are contingent upon the presentation of documents that demonstrate a person's identity and authorization to work in the United States, which are consistent with the provisions of the Immigration Reform and Control Act. 

A background check (including a criminal records check) must be completed satisfactorily before any candidate can be offered a position with the CSU. Failure to satisfactorily complete the background check may affect the application status of applicants or continued employment of current CSU employees who apply for the position.

SDSU is a smoke-free campus. For more information, please click here.

SDSU is an equal opportunity employer and does not discriminate against persons on the basis of race, religion, national origin, sexual orientation, gender, gender identity and expression, marital status, age, disability, pregnancy, medical condition, or covered veteran status.

CSU welcomes candidates of all physical abilities to apply for positions. We provide reasonable accommodations to all applicants and invite applicants with questions, concerns, or needs during any part of the application or hiring process to contact Casie Martinez at 619/597-7901 or by email at cmartinez12@sdsue.edu Inquiries will be treated as confidential to the extent permitted by law.